Two pieces of EU legislation have recently come into force that make changes for both European Union Trade Marks (EUTMs, formerly CTMs) and national trade marks in the EU. Regulation (No. 2015/2424) amends the law relating to EUTMs and Directive 2015/2435 amends the law for EU member states’ national trade mark systems.
Most of the changes for EUTMs are effective from 23 March 2016. EU member states have until 15 January 2019 to implement the changes to their national trade mark laws. Some changes at EUTM and national level do not come into force until later in 2017.
The following are some of the more significant changes.
Name changes: From 23 March 2016, Community trade marks are known as European Union trade marks (EU trade marks or EUTMs) and OHIM (Office for Harmonisation of the Internal Market), the registry that administers them, has become the European Union Intellectual Property Office (EUIPO).
Fees: The EUTM filing and renewal fee will no longer cover three classes but only one.
EUTM applicants will pay a slightly lower fee than before if they apply for only one class (€850 as opposed to €900), the same fee as before if they apply for two classes and an extra €150 for each class after that. Renewal fees have been set to the same level as application fees (€850/€900/€1050), reduced from €1350 for the first three classes. There are reductions in other EUIPO fees too.
Specifications with class headings in them: From 24 September 2016, any EUTM’s specification of goods or services that includes certain phrases known as class headings will be interpreted literally. In the past, all the goods that trade mark law decreed fell in a particular numbered class of the Nice Classification were deemed to fall within a specification if it simply repeated the class headings. This was so even if under a literal interpretation the goods were not covered. For example, spectacle frames were deemed to fall within the Class 8 class heading of ‘hand tools and implements (hand operated); cutlery; side arms; razors’ because the law categorised them as Class 8 though they couldn’t naturally be interpreted as a hand tool or any other term in the class heading. Because of this change, trade mark owners of EUTMs applied for before 22 June 2012 may file a declaration to restate the goods in a clear, precise and specific manner. This declaration can be filed from 23 March 2016 until 23 September 2016.
Change in definition of trade mark: a trade mark no longer needs a graphical representation to be registered. It now has to be capable only of being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter.
Certification and collective marks: There is a new right of an EU certification mark that a non-trading body that is capable of certifying adherence to certification mark standards can apply for in order to certify others to use the mark if they comply with the standards. Member States have to bring in legislation for certification marks and also collective marks if they do not already have legislation for these. Collective marks already exist at EU level and allow associations of manufacturers, producers and traders to register a mark and set the standards for compliance, including for geographical indications.
Bad faith invalidity: National trade marks can now be declared invalid if registered in bad faith. Member States also have the option to specify that applications can be refused registration for bad faith. There are no corresponding provisions for EUTMs.
Additional ground for refusal for functional trade marks such colour or sound marks: These can now be refused on the basis that their characteristic either results from the nature of the goods themselves or is necessary to obtain a technical result or gives substantial value to the goods.
Earlier opposition period for International (WIPO) Registrations: For International Registrations that designate the EU as one of the countries, the opposition period now starts one month after the date of publication where it was previously six months.
Protection of Designations of Origin and Geographical Indications: These can now form the basis of an opposition.
Filing observations against an EUTM application: It has always been possible to file an observation, arguments that are not filed as a formal opposition to an application, and the EUIPO may take these into account when considering the application. When this can be done has now been codified though there is no change to the practice. They have to be filed at any time after the application has been filed and before the end of the opposition period or, if an opposition has been filed by someone, then before the final decision on the opposition has been made. Member States may allow observations to be filed in relation to national trade mark applications.
Protection of trade mark with a reputation: The new law codifies existing case law that broadened the scope of protection for marks with a reputation. As long as a competitor’s use is without due cause that takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark, the use can be in relation to goods or services which are identical with, similar to or not similar to those for which the mark is registered.
Infringement by breach of Comparative Advertising Directive: Use of a trade mark by competitors in breach of the Comparative Advertising Directive will now be trade mark infringement, eliminating previous uncertainty.
Counterfeit goods in transit: These will now infringe a registered trade mark overturning previous case law which held that goods could only infringe in the EU if they had been released for free circulation in the EU. Also, customs detention can now be invoked to prevent import into the EU of goods bearing a mark that cannot be distinguished in its essential aspects from that trade mark – i.e. a very similar but not identical mark – unless the trade mark owner could not prevent sale of the goods in the country of destination.
Defence to infringement of using one’s own name or address: This will only be available to an individual using his or her own name or address in the course of trade in accordance with honest practices. The defence will no longer be available to companies.
Company and trading names: It has been confirmed that these may infringe a registered trade mark.